- Apple Inc. v. Mozido Corfire-Korea, Ltd.All claims unpatentablePTAB · Dec 27, 2023 · IPR2022-01149 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over the asserted combinations of Hertel, Chitti, Spodak, and Tedesco, with additional references for claims 5–10.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see any substantive difference between the parties’ proposals. We adopt Petitioner’s definition of the level of ordinary skill because it is consistent with the ’692 patent and the applied prior art, but note that our obviousness evaluation would not differ if we were to apply Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Other than the claim terms discussed below, we determine that we do not need to expressly construe any other terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not agree with Patent Owner because there are several issues with its proposed construction. First, the claims do not recite that a temporary payment card “can only be used for a payable time” nor does Patent Owner direct us to specific claim language suggesting the claims should be limited to the two embodiments identified by Patent Owner. EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”). The claim language is not limited to the embodiments identified by Patent Owner. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). Claim limitation 1.8, for example, recites only “resetting the setting of the temporary payment card when the payable time passes such that the mobile payment card is no longer set as the temporary card and payments are made through a main card.” Ex. 1001, 8:3–6. This limitation broadly relates to embodiment 2 listed above (i.e., “if no payment is made with the temporary payment card during the payable time, the main payment card is reset at the expiration of the payable time”), and is not limited to embodiment 1 listed above. Second, Patent Owner’s proposed construction renders superfluous portions of limitation 1.8. If “temporary payment card” is construed so that it “can only be used for a payable time,” then this construction renders superfluous the portion of limitation [1.8] that specifically recites a condition on resetting the temporary payment card (“when the payable time passes . . . .”). Ex. 1020 ¶ 25. Third, Patent Owner’s proposed construction that the temporary payment card “can only be used for a payable time” excludes embodiments in the ’692 patent. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1320 (Fed. Cir. 2005) (“A claim construction that does not encompass a disclosed embodiment is rarely, if ever, correct.” (alteration omitted)). The ’692 patent, for example, discloses that a user can reset the temporary payment card “even if the payable time remains” by sliding down the temporary payment card on the screen. Ex. 1001, 5:16–19 (“When the user intentionally slides down the temporary payment card as shown in FIG. 13 even if the payable time still remains, the setting of the temporary payment card is reset.”). Thus, the ’692 patent does not require that the temporary payment card can “only be used for a payable time” because a user may intentionally remove the card before the payable time expires.” slip op. at 15
- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION8 For the reasons discussed above, we determine Petitioner has proven, by a preponderance of the evidence, that all of the challenged claims are unpatentable, as summarized in the following table:” slip op. at 61
Patent outcomesUS 10,223,692 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,223,692 - PTAB · Dec 15, 2023 · IPR2023-00941 · APJ Jameson Lee · IPR · Institution
The Board instituted inter partes review of claims 1–18 on the asserted §103 ground over Kimura, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion For reasons discussed above, Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of claim 7 over Kimura. 4. Dependent Claims 9–12 Claims 9–12 each depend, directly or indirectly, from claim 7. Ex. 1001, 9:59–10:19. Petitioner specifically addresses all of them in detail. Pet. 56–62. Petitioner’s assertions are supported by the cited evidence, and Patent Owner does not present any argument additional to those it presents for claim 7. Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of each of claims 9–12 over Kimura.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“In particular, we are persuaded preliminarily that an ordinarily skilled artisan would have known to implement a version of the pixel circuit shown in Figures 33A–33E of Kimura with all pMOS transistors. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are sufficiently persuaded that there is general interchangeability of nMOS and pMOS transistors used as switching transistors. Thus, we are sufficiently persuaded, for institution purposes, that it would have been obvious to one of ordinary skill in the art to make a modification of Kimura’s embodiment shown in Figures 33A–33E to use pMOS type transistors for all switching transistors in the pixel circuit, which leads to an all pMOS version of Kimura’s Figure 33 embodiment.6” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“one of the first or fourth transistor to pMOS type transistor is, if anything, a teaching away from using only pMOS transistors in the embodiment shown in Kimura’s Figures 33A–33E. Prelim. Resp. 28–29. We disagree. That Kimura describes a benefit for making the first and fourth transistor of different polarity types does not constitute a teaching away from having them both being of the same polarity type. A reference teaches away from a claimed invention if it criticizes, discredits, or otherwise discourages modifying the reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has stated: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away . . . because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. Accordingly, in order for there to be teaching away, the statement in Kimura must rise above merely assessing the advantages and disadvantages among viable alternatives. It does not. The Federal Circuit explained that “[c]hoosing one alternative necessarily means rejecting the other,” and that “[t]his interpretation of our case law [treating the choosing of one alternative as a teaching away from the other alternative] fails.” Fulton, 391 F.3d at 1201. Thus, we do not find that Kimura teaches away from making the first and the fourth transistor of the same polarity type.” slip op. at 25
- Expert testimonyPetitioner expert creditedDecided for petitioner
“If the design need is for a transistor to be used as a simple on/off switch, then either an nMOS transistor or a pMOS transistor can be chosen – since, as shown in the figure from Kang and Leblebici 2003 [Ex. 1011] above [in ¶ 56 of the same Declaration], each can function as a simple on-off switch. As the primary operational difference between nMOS and pMOS (when a simple switch is desired) is that the on/off characteristics are the opposite of each other – and the on-off signals to be applied must be altered (i.e., reversed as it were) to account for this. In particular, as described in Section VII.A.1, nMOS devices turn on in response to a “high” voltage on the gate terminal and turn off when a “low” voltage is applied. This is known in the art as “active-high” signaling. pMOS transistors are just the opposite – they turn on when a “low” voltage is applied to the gate terminal and turn off in response to a “high” voltage on the gate. This is known in the art as “active-low” signaling. Changing the polarity of a switching transistor (from nMOS to pMOS or vice versa) would require changing the polarity of the gate signal to achieve the same functionality, but doing so was easy and well-known to a POSITA. Id. ¶ 57 (the reference to Kang and Leblebici 2003 identifies a figure which illustrates a CMOS inverter having an nMOS switch and a pMOS switch). The above-quoted testimony of Dr. Foty is not merely conclusory. Rather, it relies on the disclosures of Kang, Leblevici 2003, and Kimura. It also relies on the level of ordinary skill in the art and explains specifically how the change form nMOS to pMOS switching transistor, and vice versa, would be done. Also, notably, Patent Owner does not assert that implementing a switching transistor by a pMOS transistor exceeds the level of ordinary skill in the art. We also preliminarily credit the testimony of Dr. Foty because it currently stands unrebutted.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,414,599 - Intel Corporation v. Bitmicro, LLCInstitutedPTAB · Dec 15, 2023 · IPR2023-00783 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–3, 6, 10–12, and 15 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Nishida, Harari, and Nakao.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Petitioner identifies itself, Intel Corporation, as real party-in-interest. Pet. 90. Patent Owner identifies itself, BitMicro, LLC, as the real party-ininterest. Paper 3, 2. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’939 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working on computer system architecture and power management circuits, or an equivalent combination of education and experience.” Pet. 7 (citing Ex. 1003 ¶ 90). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. We regard Petitioner’s definition as consistent with the ’939 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On the record before us, we have not been directed to any dispute between the parties that § 112 ¶ 6 does not apply to the “means for” clauses recited in the challenged claims. Where claim language may be construed according to 35 U.S.C. § 112(f) (or its predecessor, § 112 ¶ 6), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). In accordance with these requirements, Petitioner provides constructions for all the means-plus-function clauses in the challenged claims. See Pet. 7–15. Where applicable, Petitioner asserts its proposed constructions are consistent with constructions made by the district court in related litigation. Id.; see also Ex. 1018. Patent Owner contends “the Board need not engage in any pre- institution claim construction,” does not substantively address or contest Petitioner’s proposed claim constructions, and does not propose any constructions itself. See Prelim. Resp. 8–10. Based on the record before us, we adopt, for purposes of this” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“3. “means for deactivating” (claim 10) Petitioner proposes that this term, recited in claim 10, should be construed consistent with the district court construction as means-plus-function, with the recited function being “deactivating the plurality of super capacitors to cut off power to the computing engine based upon the plurality of super capacitors discharging to a predetermined level” and the corresponding structure as “a down-converter (and equivalents), and switches, transistors, gates, etc. that are generally known in the art.” Pet. 10–12. Patent Owner does not provide a construction or any specific arguments directed to this limitation. See Prelim. Resp. 8–10.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,496,939 - PTAB · Dec 14, 2023 · IPR2023-00978 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 across all asserted grounds, finding a reasonable likelihood that both claims are obvious over Vornefeld and Atsuta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’931 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Patent Owner’s allegations appear to be mere speculation. Thus, we determine that Patent Owner has not demonstrated that there is a legally significant relationship between the two petitioners that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Vornefeld is art previously presented to the Office, Petitioner’s respective challenges rely heavily on Atsuta and Goldburg for teachings pertaining to the limitation added by dependent claims 28 and 29, the only challenged claims in this case. Patent Owner does not assert that Atsuta was previously presented to the Office. Patent Owner implies that Goldburg was previously presented to the Board in the prior IPR, arguing that “[prior petitioner] Sprint specifically relied on Goldburg as part of its expert declaration in the prior IPR to show the state of the art.” Prelim. Resp. 50. Petitioner replies that, “[w]hile [Patent Owner] offers that Goldburg was cited (for background) in a declaration in the Sprint IPR . . . , [Patent Owner] fails to acknowledge that Goldburg was not (i) an exhibit in the Sprint IPR, (ii) mentioned or applied in the Sprint Petition, or (iii) addressed in the final written decision.” Pet. Reply 3 (citing Exs. 1009, 1014). Patent Owner does not dispute Petitioner’s representations. See PO Sur-reply 3 (arguing that Petitioner “quibbles over whether Goldburg was a formal exhibit before the Board in the prior Sprint IPR,” but not asserting that Petitioner is incorrect). We find that Goldburg was not previously presented to the Board.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - PTAB · Dec 7, 2023 · IPR2023-00822 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR of claims 1 and 4–7 on the ground that they would have been obvious over Raleigh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1 and 4–7 of the ’047 patent. Accordingly, we institute an inter partes review as to claims 1 and 4–7 of the ’047 patent on the asserted ground of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in 2013 would have had experience in and knowledge of telecommunications and networking technologies. A POSITA would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or an equivalent. A POSITA would have also had two years of experience in telecommunications and networking. Lack of education can be remedied by additional professional experience, and lack of professional experience can be remedied by additional education. Pet. 12 (citing Ex. 1003 ¶ 21). Patent Owner takes no position with respect to Petitioner’s description of this hypothetical person. Prelim. Resp. 13–14. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’047 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Here, neither party asserts that any term requires specific construction to resolve the controversy. Pet. 12; Prelim. Resp. 12. We agree that no term is in controversy, and therefore, we do not need to construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Consequently, each claim term is given its ordinary and customary meaning.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“showing sufficient for institution that Raleigh teaches limitations [1.4] and [1.5]. We agree that the claimed activation request and response for the group plan, communicated between the unified services platform system and the third party application service provider system, is taught by a combination of Raleigh’s service provider application process (Figure 35) and Raleigh’s service selection process (Figure 36). Pet. 18–19, 22, 33–35. We credit Dr. Houh’s testimony supporting Petitioner’s rationale for combining the teachings of Raleigh. Dr. Houh testifies that the service selection process of Figures 36A and 36B may be conducted in conjunction with the selection of a service provider as described in Figures 35A and 35B. Ex. 1003 ¶ 90. Dr. Houh further testifies that Raleigh describes a comprehensive architecture that would suggest to a person having ordinary skill in the art that the service selection and activation procedures of Figures 35 and 36 are interrelated and combinable. Id. ¶¶ 51–52. Dr. Houh points to statements in Raleigh that the teachings of numerous Figures, including those describing managing services for a master service account, “can apply equally” to the teachings of Figures 35 and 36. Id. ¶ 51 (citing Ex. 1005 ¶¶ 1841, 1847, 1851, 1853, 1855, 1856). Dr. Houh testifies that, in view of these statements, a person having ordinary skill in the art would have been motivated to combine Raleigh’s service selection processes with purposes of institution, such a combination is supported by the current record and teaches limitations [1.4] and [1.5].” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,883,047 - PTAB · Dec 7, 2023 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Institution
The Board instituted review of claims 1–26 on both asserted obviousness grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion Regarding Ground 1 Based on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claims 1–26 as unpatentable in view of RFC 3209 and Raz.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of ordinary skill in its Preliminary Response. At this preliminary stage and on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. Inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions. Pet. 4; see generally Prelim. Resp. Based on the current record and without any opposition from Patent Owner, we see no need for express construction of any term at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,602 - Intel Corporation v. Bitmicro LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00779 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that Danilak and Cornwell taught or suggested the claimed transfer-size selection limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Ex. 1005 ¶ 73 (emphasis added).8 We discern no teaching or suggestion in paragraph 73 of Danilak that “the transfer size is a function of a data size of the memory transaction” or of any consideration of the “data size of the memory transaction.”” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,135,190 - Intel Corporation v. Bitmicro LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00780 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Intel did not show that Danilak and Cornwell taught or suggested the transfer-size limitation in challenged claims 45, 46, 51-54, 57, 59, 71, 72, 76, 77, 80, 82, 84-87, 92, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working with storage systems (including storage systems made up of different types of storage devices), file management policies, and different data access patterns, or an equivalent combination of education and experience.” Pet. 4–5 (citing Ex. 1003 ¶ 57). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’190 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We determine that no terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this Decision, we give the claim terms their plain and ordinary meanings.8” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Id. at 48–49 (emphasis added). Contrary to Petitioner’s contention, we determine that Petitioner has failed to adequately and persuasively demonstrate that there is a teaching or suggestion in paragraph 73 of Danilak of “selecting a transfer size for the memory transaction, wherein the transfer size is a function of a data size of the memory transaction.” Paragraph 73 of Danilak states: Other translations that may be performed by the other translations unit 509 may include a test to ensure that the amount of configured memory reported to the host is the same as or less than the amount of physically-attached memory. Addition, if the configured page size reported to the host is different than the discovered page size in the attached devices, a translation may be performed by the other translations unit 509. For example, if the configured page size is larger than the discovered page size, the memory request may be performed to multiple flash memory devices to form a page of the configured size. If the configured page size is larger than the discovered page size multiplied by the number of flash memory devices, the request may be performed as multiple operations to multiple pages on each device to form a page of establish that paragraph 73 of Danilak teaches or suggests the “selecting” limitation. between the configured size reported to the host and the attached flash devices, the other translation unit 509 may concatenate two blocks and their redundant areas. If the organization reported to the host is narrower than the organization of the attached devices, the translation unit 509 may select a byte or bytes from the data provided by the attached devices to be output as the data for the request. Ex. 1005 ¶ 73 (emphasis added).11 We discern no teaching or suggestion in paragraph 73 of Danilak that “the transfer size is a function of a data size of the memory transaction” or of any consideration of the “data size of the memory transaction.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,135,190 - PTAB · Dec 6, 2023 · IPR2023-00963 · APJ Kristen L Droesch · IPR · Institution
The Board instituted review of claims 1–18 on all petitioned grounds and granted joinder to the Volkswagen IPR, with the joined petitioners’ role limited as specified.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted an inter partes review in the Volkswagen IPR. See IPR2022-01567, Paper 8 (“1567 Dec. on Inst.”). We incorporate our previous analysis regarding the asserted grounds of unpatentability and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’450 Patent challenged in the Petition for the same reasons. See 1567 Dec. on Inst. 10–73. Therefore, we determine that the Petition warrants institution of inter partes review on all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“we are persuaded that it is appropriate under these circumstances to join Petitioner to the Volkswagen IPR. Petitioner challenges the same claims that are challenged in the Volkswagen IPR on the same grounds using the same prior art and evidence. Petitioner explicitly agrees that it will take an “understudy role” in the Volkswagen IPR, and has shown that the trial schedule will not be affected at all by joinder. See Mot. 7–9; Mot. Reply 1; see also Opp. 2 (Petitioner “has said it ‘will act as an understudy’ until the target IPR petitioner is no longer a party in the proceeding.”). At this stage of the proceeding, we determine Patent Owner’s additional conditions are not necessary. See Opp. 2–3. If Petitioner fails to abide by its own conditions, then Patent Owner should meet and confer with Petitioner and contact the Board, if the parties cannot come to an agreement. For the reasons discussed above, we determine that joinder to the Volkswagen IPR would result in the just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Accordingly, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Volkswagen IPR.” slip op. at 18
NonePatents in suitUS 10,447,450 - General Motors LLC / Nissan North America, Inc. v. Neo Wireless LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00962 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution on claims 7 and 11 under § 314(a), finding that the General Plastic factors favored denying this follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“previously filed a petition directed to the same claims of the same patent.” General Plastic, Paper 19 at 16. “[O]ur application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve, Paper 11 at 2, 8–9.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“seeking joinder to Ford Motor Co. v. Neo Wireless LLC, IPR2023-00763. See Mot. 1. Petitioner acknowledges “[s]hould the Ford IPR be . . . not 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’450 Patent claims the benefit of an earlier effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA versions of §§ 102 and 103. 3 US 2006/0039274 A1, published Feb. 23, 2006 (Ex. 1005). 4 IEEE Standard for Local and Metropolitan Area Networks, Part 16: Air Interface for Fixed Broadband Wireless Access Systems (Oct. 1, 2004) (Ex. 1006). instituted for any reason, Petitioners submit this motion for joinder would be moot, and requests the Board consider Petitioner’s IPR petition on its own merits.” Institution was denied in IPR2023-00763. Ford Motor Co. v. Neo Wireless LLC, IPR2023-00763, Paper 17 (PTAB Nov. 9, 2023). Accordingly, we deny Petitioner’s Motion for Joinder as moot.” slip op. at 10
Discretionary denialPatents in suitUS 10,447,450
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.